Ex Parte Nakagawa

Board of Patent Appeals and Interferences

Jan 7, 2010

10437920 (B.P.A.I. Jan. 7, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HAJIME NAKAGAWA
____________

Appeal 2009-005472
Application 10/437,920
Technology Center 1700
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Decided: January 7, 2010
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Before EDWARD C. KIMLIN, CHUNG K. PAK, and TERRY J. OWENS,
Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 1-13, 43, and 45.
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6. A copy of
illustrative claim 1 is appended to this decision.
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The Examiner relies upon the following references as evidence of
obviousness:
Matsumoto ('668) 5,958,668 Sep. 28, 1999
Nakamura 6,013,421 Jan. 11, 2000
Takeuchi 6,071,678 Jun. 6, 2000
Oya US 2001/0051319 A1 Dec. 13, 2001
Ezoe 6,331,386 B1 Dec. 18, 2001
Matsumoto ('470) 6,596,470 B2 Jul. 22, 2003
Kyota 6,800,430 B2 Oct. 5, 2004
Totani ('191) JP 08095191 Apr. 12, 1996
Uytterhoeven ('355) WO 97/04355 Feb. 6, 1997
Muenter ('064) EP 1 168 064 A2 Jan. 2, 2002

Declarations under 37 C.F.R. § 1.132 submitted on Nov. 24, 2004, May 20,
2005, Dec. 8, 2005, Aug. 31, 2006, and Apr. 12, 2007.

Appellant's claimed invention is directed to a photothermographic
material comprising an image forming layer containing, inter alia, a
photosensitive silver halide and a binder that is more than 70 % by mass
gelatin. Also, a development accelerator is contained in a layer that is
located on the side of the support where the image forming layer is disposed.
The development accelerator is within the scope of the recited formula.
Appealed claims 1-10, 12, 13, 43, and 45 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Matsumoto '668 or PN '191 in
view of Oya, Matsumoto '470, Kyota, Ezoe, Takeuchi, or Nakamura. Claim
11 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the
stated combination of references further in view of EP '064. Claim 45 stands
rejected under 35 U.S.C. § 103(a) as being unpatentable over the stated
combination of references further in view of WO '355.
Appellant does not present separate arguments for any particular
claim on appeal, nor does Appellant offer separate, substantive arguments
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for the § 103 rejections of claims 11 and 45. Accordingly, all the appealed
claims stand or fall together with claim 1.
We have thoroughly reviewed each of Appellant's arguments for
patentability, as well as the declaration evidence relied upon in support
thereof. However, we are in complete agreement with the Examiner's
reasoned analysis and application of the prior art, as well as the Examiner's
cogent disposition of the arguments raised by Appellant. Accordingly, we
will adopt the Examiner's reasoning as our own in sustaining the rejections
of record, and we add the following for emphasis only.
Appellant does not dispute the Examiner's factual determination that
Matsumoto '668 and PN '191, like Appellant, disclose photothermographic
materials comprising an image forming layer containing a photosensitive
silver halide and the other recited materials with the exception of the
specifically claimed development accelerator. However, the Examiner cites
six references as evidence that it was known in the art to use the claimed
development accelerators. Accordingly, we find no error in the Examiner's
legal conclusion that it would have been prima facie obvious for one of
ordinary skill in the art to use development accelerators within the scope of
the claimed formula in the photothermographic elements of Matsumoto '668
and PH '191.
Appellant submits that "[o]ne characteristic feature of Matsumoto is
the use of a water-soluble binder in the image forming layer; however the
binder used in Examples is PVA, (not gelatin)" (Br. 10, last para.).
However, as pointed out by the Examiner, Matsumoto '668 expressly teaches
the use of gelatin as a binder, and it is well settled that a reference must be
considered for all that it fairly teaches, not just its exemplified embodiments.
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Appellant notes that five Declarations under 37 C.F.R. § 1.132 have
been presented over the course of prosecuting the present application, but
Appellant discusses only the Declaration submitted April 12, 2007.
Appellant cites the Declaration for showing the effect of the development
accelerator when the gel content in the image forming layer is more than,
and less, 70 mol %. However, Appellant has not refuted the Examiner's
legitimate criticisms of the Declaration lodged at pages 10-15 of the Answer.
For instance, the Declaration is not reasonably commensurate in scope with
the degree of protection sought by the appealed claims. In re Grasselli,
713 F.2d 731, 743 (Fed. Cir. 1983). As explained by the Examiner, while
the Declaration uses a development accelerator in accordance with the
claimed formula wherein R1 is a carbamoyl group and Q1 is a phenyl group
of a six member unsaturated ring containing two nitrogen atoms, R1 of the
appealed claims may also be an acyl group, an alkoxycarbonyl group, an
aryl- oxycarbonyl group, a sulfonyl group or a sulfamoyl group, and Q1 may
be a 5 to 7-membered unsaturated ring linked via a carbon atom to NHNH-
R1. Appellant has not demonstrated that the Declaration results attributed to
a species of the claimed formula reasonably translate to the myriad of
compounds encompassed by the claimed formula.
Appellant also has not addressed the Examiner's criticism concerning
how the reported gel contents of 65% and 71% relate to the gel/SPR ratio of
69/31 or 76/24.
Also, Appellant has not refuted the Examiner's finding that "[t]here is
nowhere in the specification disclosure that the 'gel content' is determined by
the sum of the gel content in the silver halide content, the 'gel content' in the
binder used in the coating process, and the 'gel content' to form dispersion of
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additives such as being presented in the claimed invention" (Ans. 12, first
full para.). The Examiner points out that the formula to determine the gel
content in the Declaration was not presented in the original Specification.
The Examiner notes that page 11 of the Specification states that the gelatin
binder is used in an amount of most preferably 70% by mass or more
relative to the binder employed in the image forming layer.
Furthermore, Appellant has not addressed the Examiner's finding that
it would have been expected by one of ordinary skill in the art, based on the
disclosure of PN '191, that a binder having a gelatin content of 71%
produces a higher image density than an image forming layer containing
65% gelatin. Just as unexpected results are evidence of nonobviousness,
expected results are evidence of obviousness.
In conclusion, based on the foregoing, it is our judgment that the
evidence of obviousness presented by the Examiner outweighs the evidence
of nonobviousness proffered by Appellant. Accordingly, based on the
foregoing and the reasons well stated by the Examiner, the Examiner's
decision rejecting the appealed claims is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

cam

TAIYO CORPORATION
401 HOLLAND LANE
SUITE 407
ALEXANDRIA, VA 22314

Appeal 2009-005472
Application 10/437,920

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APPENDIX